We all know that pumpkin-related products are far more common on the shelves in the autumn. This quick Friday blog looks at the highly important question: how seasonal are filings for pumpkin-related marks?
Not really very seasonal! That’s a bit surprising, because people care about pumpkins a whole lot less outside of the fall. We looked at filing numbers for both marks that contained PUMPKIN and marks with pumpkin in the description of goods, and compared the overall filings from 2010-20 and filings just in September/October/November of those years.
On the mark front, applications for PUMPKIN marks were very slightly more common in the fall, accounting for 32% of applications. Filings with “pumpkin” in the goods, in contrast, was essentially exactly on par with the rest of the year: 25% of total applications.
There are a few things that could be going on here. First, and probably the key factor, is that many companies offer pumpkin-themed products under their house marks or key products marks, from Starbucks coffee to Special K cereal to Kind bars and many more. These include “pumpkin” or “pumpkin spice” in the descriptive text of the packaging, but not in the mark itself, and so don’t necessitate any other filings. Second, companies often plan ahead, and get applications on file well in advance of a product launch. That “spreads out” applications over the year.
As a final check, we did a quicker search of the COLA registry at the Alcohol and Tobacco Tax and Trade Bureau. As common as pumpkin-y craft beers and flavored spirits are, and since seasonal variants often have different packaging that IS registered, we thought a quick search might show real differences. Nope! Only about 21% of COLA registrations that included “pumpkin” as the brand or fanciful name were filed in the fall months.
Like many of our readers, we nodded along in agreement with the TTAB while reading the most recent Monster Energy opposition decision, Monster Energy Co. v. Cavaliers Hockey Holdings, LLC, Opp. No. 91240680 (TTAB Oct. 6, 2020) (hat tip to John Welch for his tireless blogging) . The Board held that the mark CLEVELAND MONSTERS (stylized) for a variety of merchandised goods was unlikely to be confused with MONSTER for energy drinks and various merch; jewelry, clothing, printed materials, and retail services present in both applications.
While the MONSTER mark was conceptually and commercially strong for beverages, the Board found that marks as a whole were quite different, and the teams’ longstanding use as CLEVELAND MONSTERS mark and its predecessor LAKE ERIE MONSTERS mark for the sports franchise. The considerable evidence of third-party registrations including MONSTER carried quite a bit of weight, finding that MONSTER was conceptually weaker and diluted for other products and services.
This got us thinking about how we’d use TM TKO’s tools to pull together this sort of evidence for a Board proceeding.
First, let’s pull evidence that MONSTER is diluted. The easiest way is a manual search of MONSTER marks by class (14 first, then 25, etc.; sort the results by owner, flag the key ones, and export a summary to Word format and export the TSDR status and title copies for the exhibit using the TSDR export button. Class 14 alone has 8 different owners other than Monster Energy with co-existing marks that included variations of MONSTER as a term. You would then repeat for each class that was at issue.
(You could also pull dilution evidence with a ThorCheck Term Coexistence search, looking for MONSTER in both marks and checking the “include non-exclusive term matches” box. This generates a report showing examples of MONSTER co-existence, with the most similar marks sorted in each class, and the report overall ordered by class.)
Second, let’s pull evidence that adding a term like CLEVELAND is enough to avoid confusion. We can use a ThorCheck Term Difference search, adding CLEVELAND as the term by which two otherwise-similar marks differ. Looking at the relevant classes, we see the CLEVELAND CAVALIERS and VIRGINIA CAVALIERS co-existing in a bunch of classes, plust marks like CLEVELAND AGAINST THE WORLD and DETROIT AGAINST THE WORLD and CLEVELAND BROWNS and BROWNS LONDON in Class 25, CLEVELAND ARMORY vs. THE ARMORY in Class 35, and more. After exporting these results (Word and TSDR), you can repeat for other city names and amass other evidence that consumers are used to a city name + nickname adequately differentiating two marks.
Finally, we can find examples of USPTO Examiners issuing refusals based on the common term MONSTER but letting the junior application through to publication. This obviously isn’t binding on the Board, but it doesn’t hurt to provide examples of other reasoned decisions that reflect your position. A quick manual search of just examples where both the senior and junior marks are still active and the junior mark has been published or registered finds over 100 examples, including more than 30 where the prior cited mark was a single word, as here. If we broaden the search out to those that co-existed at some point in the past but no longer do, we’d certainly find a number of additional examples.
We did some research on the relative commonality of different types of printed fiction over the period 2010-2020, to see if trademark filing trends have varied over the years. Drum roll… they haven’t, really. Filing numbers for types of genre keywords remained incredibly consistent over the years. General terms like “fiction,” “nonfiction,” and “novels” were all extremely popular – no surprise, since the trademark registration process incentivizes applicants to use broad descriptions to claim as much “turf” as possible.
The one big surprise – at least for the author – is how common filings for comics and graphic novels were. It was the single most common specific genre, dwarfing many more traditional categories. To speculate without a whole bunch of concrete evidence, I’d guess that there two things driving this. First, there seem to be more small publishers active in the comics / graphic novels front. Second, more authors in the space may be seeking trademark protection for characters, etc. with an eye towards licensing or merchandising than other genres, given how permeable the membrane between comics and TV/movies have been (at least at the high end). The fact that many comics are sold in a series also makes the registration process simpler compared to novels, where the “single creative work” rule has traditionally made the registration process difficult or unobtainable for authors.
How does this match up with sales figures? Per Book Ad Report, the top fiction genres in order were romance ($1.4b), mystery and sci-fi (between $728m and $590m), then children’s ($160m; not done as a separate category when we ran our numbers) and horror ($79m).
This blog post takes a look at how a few top companies that the Financial Times identified as “prospering in the pandemic” have treated their trademark portfolios during since March 2020. For the purposes of this blog post, we’ll just look at new applications in the US and EU. This will almost certainly under-count the final numbers from the March – September time period, since sophisticated companies tend to use “stealth” filings in out-of-the-way jurisdictions to get applications on file and trigger the Paris Convention priority period, but stay under the radar.
Tech titans Amazon, Microsoft, Google, Facebook, Tencent, Nvidia, and Paypal all had a good number of applications in both the US and the EU. Jurisdiction-specific companies like T-Mobile USA primarily had filings in the US, and Pinduoduo and Meituan Dianping (both mainly active in China) didn’t do much in either market. Tesla, Shopify, and Zoom Video all had fewer filings, but rely largely on their strong house marks more than secondary product-level branding.
These numbers aren’t markedly different from the prior year — a little variation, but nothing more than the usual ebb and flow of product launches would suggest. While these companies have been financially successful in riding out the the pandemic from a profits perspective, they haven’t seen a corresponding boom in trademark filings.
Our big summer project has been a set of data expansion projects. While these aren’t live on the production server yet — although they’re coming soon — this blog post provides a little sneak peek at some research into the sports market in the US and Canada. There aren’t any revolutionary findings here: Canadians are way more into hockey and more into rugby and cricket than Americans, but it was still interesting to see the intuition play itself out in the data.
To test the relative interest in the sports, I looked at active, use-based applications or registrations in Class 28 (sporting goods) or 41 (sporting events or training services) in both jurisdictions. The US search criteria was a bit more restrictive, looking only at a keyword in the targeted class. Canada just looked for both the keyword and the class together, although not necessarily the keyword in the class. That difference resulted in the US and Canada having very similar counts, despite the US obviously being the much larger market and trademark registry.
Soccer, baseball, golf, tennis were pretty comparable in both countries. Basketball and football were relatively more popular in the US, and, as noted above, hockey, rugby, and cricket were proportionately more popular north of the border.
Compare those filing numbers with the “favorite” and “participation” numbers in the US for the major sports from Wikipedia.
Golf wasn’t included in the Wikipedia table; other sources estimate ~22m participants in the US.
The other thing that stood out is how weird golf is. It has far, far more filings than its relative popularity as a sport would suggest. Presumably part of this is its “gadgety” nature — the sport requires expensive clubs and balls, and lends itself to the use of lots of training accoutrements. To some extent, money can buy (slightly) better results, and the golfing demographic tends to have some cash to spend. In contrast, a sport like basketball really only requires some shoes and a ball, both of those tend to last a while, and a nice new pair of shoes is going to have more aesthetic than functional impact. The continuing (although less dramatic) need for equipment spend probably buoys the tennis and baseball trademark filing numbers a bit, too. Curiously, while football and hockey are pretty equipment-intensive, they don’t see the same spike in trademark filing. These tend to be more “young men’s games,” with participation rates that quickly drop way down compared to viewing interest. As such, while they might be lucrative to present on TV and drive wind on sports radio talk, they don’t generate the same kind of ongoing gear spend that a more lifelong sport does, and that seems to be reflected in the trademark filing trends.
A quick-hitting blog post this morning: we ran some numbers on trademark filing volumes at the USPTO in 2020 v. 2019. Despite all the ways in which the world is generally pretty horrible right now, trademark application volumes are increasing — applications from US-based applicants are up a good bit for the year, despite a brief dip in the spring compared to 2019, and applications from non-US applicants are up too.
As you might have expected, the foreign part of this is heavily China-driven. From July-September 2020, Chinese applicants accounted for a whopping 79% of USPTO applications filed by non-US applicants.
What does this mean for US law firms? Well, there’s a lot of work out there! The Chinese-based applicants are, for the most part, not relying on traditional, large firms or big IP boutiques. This is a major contrast to applicants from other countries, where larger companies tend to gravitate towards larger US practices.
We took a quick spin through the counsel data for a recent month, and it’s an interesting mix. The most common names were Haoyi Chen at Arch & Lake, Jonathan Morton (at a variety of different firms based in China and Canada), Tony Hom at Daisy IP, Di Li at Di Li Law, PC, William Goldman at Goldman Law Group, Elias Hantula at Hantula & Associates, Adriano Pacifici at Intellectual Property Consulting, LLC, Yan Gao at IPSpeedy Consulting Company LLC, Francis Koh at Koh Law Firm, Yi Wan at Law Office of Yi Wan, Richard Withers at Liu & Associates, and Hao Ni at Ni, Wang & Massand, and Nyall Engfield‘s China offices (no individual attorney listed), Shan Zhu (Shan Zhu Law Group), Kathy Qi Hao at TCW Global Legal Group, Zhihua Han at Wen IP LLC, Jie Luo at Woodruff & Luo, Andrew Morabito at Morabito Law Office, Agnus Ni at AFN Legal, Devasesna Reddy (HM Law Group; uses kafiling.com emails), Elizabeth Yang (Yang Law Offices), Jeffrey Firestone (uses varied emails, generally sealaws.cn or foxmail.com), Yiheng Lou (foxmail.com email), Weibo Zhang (Zhang Law Office), and more. It’s an interesting mix of largely smaller firm, many of whose attorneys have larger firm or USPTO Examiner experience, and, unsurprisingly, Chinese-language skills are the strongest thread.
In doing research for an unrelated project, I noticed what seemed to be a ton of applications for sanitizers. That sounds like a quick and easy blog post! I ran a search for any of the terms sterilizer bactericide germicide virucide viricide in the description of goods.
March 2020 – August 2020: 3,234 September 2019 – February 2020: 773 March 2019 – August 2019: 1239 September 2018 – February 2019: 929 March 2018 – August 2018: 935 September 2017 – February 2018: 1041
The evidence of a filing surge related to actual sterilizing products is mixed. It’s certainly true that there are more filings than normal, and by a lot. Of the single-class applications, the key ones for post-Covid-era filings were Class 5 (cleaning supplies), 10 (medical equipment), 11 (air sterilizers), and 37 (sanitary services).
Class 1: 9 Class 3: 22 Class 5: 299 Class 10: 330 Class 11: 1868 Class 35: 16 Class 37: 25
I didn’t consider multi-class applications — roughly 20% of the total — because it’s just way more of a hassle to break down the data than a quickie blog post is worth.
There’s good reason to think that there is some rise in anti-virus or cleaning products and services, but that it’s far less than the raw numbers suggest. Of these applications, over 2,000 were filed by Chinese applicants compared to only 779 by US-based applicants. While Chinese-based applicants have a huge presence on the USPTO registry, it’s still unusual to see a data slice this kind of an applicant spread, where non-US applicants predominate over US-based applicants. It looks like the Chinese applicants are way over-represented in Classes 10 and 11, and appears that some pre-existing goods & services strings (i.e. from the ID Manual) may have driven this — Chinese applicants were under 1/3 of the Class 5 filings, a much more normal ratio. And, as always, who knows how nearly foreign-based applicants 1(a) and 1(b) claims actually reflect reality on the ground in the US. Without the Chinese applicant surge, we’d be looking at slightly higher-than-usual application numbers but not way higher.
Anecdotally, post-registration Office Actions have been on the rise. TM TKO took a look at the numbers to (a) see if this is a real trend as opposed to just a perceived one and (b) to figure out what the key issues driving these Office Actions are.
Are Post-Registration Office Actions Increasing?
Yes, they are. The Office is on pace to issue 1.5 times as many post-registration Office Actions in 2020 vs 2019. The increase has been significant in recent years; there are going to be 2.5x as many post-registration Office Actions in 2020 as in 2016.
What Issues are Driving Post-Registration Office Actions in 2020?
We have broken down some of the most common issues. This isn’t an exhaustive list by any stretch, just those that seemed to be popping up often in spot-checks.
Website Specimen issues
The largest single issue, with over 15,000 refusals, were issues with a post-registration specimen not showing a URL or date of access/printing for a website. Show them both or include an affidavit from the person who printed the website to avoid the refusal.
Approximately 6,000 of the post-registration Office Actions were random audits. Audits are roughly on pace from 2019, but way up from 2018. We took an in-depth look at post-registration audits and their success in paring back trademark registry deadwood earlier this year; read more in our blog post. Make sure you double-check that the mark is in use on all goods or services – even if you have instructions from your client of foreign counsel – to avoid having to trim back your registration or even the (outside) risk of disciplinary issues.
“Normal” Specimen Issues
About 5,000 Office Actions raised “normal” specimen refusals — the specimen didn’t show the goods or services in question, or wasn’t legible, or the like. The Office isn’t great about clearly labeling specimen refusals, so this count probably has the widest error bars. Submitting good specimens in general is far beyond the scope of this blog post.
Requirements that a new owner “establish its ownership” of a mark are quite common, resulting in over 1,300 Office Actions in 2020. These run a mix of situations: the Section 8 affidavit was filed by a new company, the Section 8 was filed by an old registrant, the chain of title had some random discrepancy that is finally coming to light, or all the same sorts of issues with a Section 7 request.
Bar info requests are quite common, generating over 3,000 requests. The post-registration forms aren’t great about forcing post-registration attorneys update old records — and generally discourage mass updates in large portfolios — so these refusals are popping up a lot.
Substitute specimens in a post-registration filing require a $100 deficiency fee. This is a bit hard to count, because some of the same language is used to say that a fee is required or to say that it isn’t, but it looks like this generated ~350+ refusals. This deficiency fee does not necessarily apply to clarifications about website print dates. Anyway, exercising a lot of care in providing the initial specimens can avoid this issue arising in the first place.
There have only about fifty of these in 2020. That is no great surprise, since excusable non-use claims are pretty rare to begin with. Just know that if you’re going to submit an excusable non-use claim, there is a decent chance that you will get asked for more information anyway, so you might consider submitting a detailed affidavit from the client from the outset.
Update your older registrations with your bar info during or prior to filing a Section 7, 8, or 9 document, make sure a URL and date and in your website screenshots, and make sure that the entity that auto-populates in the form is actually the same as the most recent owner in the Assignments tab, and your chances of getting a post-registration Office Action will drop by a quite lot.
The TTAB decision in In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) decided three cannabis-related points of law. First, CBD in food products is outside the scope of the Farm Bill’s permissions; second, that dietary or nutritional supplements were “food” regulated under the Federal Food, Drug and Cosmetic Act (FDCA) and thus the CBD-containing products were unlawful, and third, that CBD did not fall within an FDCA exception for drugs or biological products marketed in food before any substantial clinical investigations involving the drug of biological products were instituted.
To assess Stanley’s impact on examination so far, we looked at refusal rates based on the FDCA and relating to applications that include Class 5, and those that explicitly call out any of hemp, CBD, cannabidiol, cannabis, or marijuana in their descriptions of goods. First, we looked at the trends in FDCA refusals over time. There were very few refusals in 2018. This jumped considerably in 2019 to around 2,000 refusals, as the trademark applications filed after passage of the Farm Bill in late 2018 began to be examined. The pace has only increased in 2020, where the Office is on pace to issue around 6,000 FDCA-based refusals.
We also examined the FDCA refusal rates within 2020, to see if the Office picked up the rate of refusals after the Stanley decision was issued. So far, there has been little impact — refusals are continuing at roughly the same, high rate that they were issued prior to the decision. The USPTO is applying the overall standards laid out in Section 907 of the TMEP, and the Stanley decision has simply ratified the USPTO’s course of action rather than changed the course .
Finally, we looked at Office Actions that directly cited to Stanley. Only seventy-seven Office Actions issued to applicants that include Class 5 goods cite directly to Stanley, as do thirty-five that do not involve Class 5 goods, with those numbers increasing in the last few weeks as the USPTO has seemingly added a sentence to its form database that references the case. It’s our expectation that the citation to Stanley will become a matter of course for the USPTO, especially in Class 5 refusals, and that the number of refusals on FDCA grounds will continue to at its current pace and will not rise further because of Stanley.
The Supreme Court recently decided that the mark Booking.com was not generic, had acquired secondary meaning, and was registrable on the Principal Register. This post assesses its potential impact by analyzing prosecution trends.
The Prior State of Generic or Descriptive TLD Marks
Using our trove of 12 million + Office Actions and Responses, we searched for applications that went abandoned since 2010 and faced a genericness and/or 2(e)(1) refusal. (The Office isn’t incredibly consistent in its phrasing for these refusals, so we looked at both to be safe.) 2,500 applications met these criteria; of them, 184 were on the Supplemental Register already. 1724 marks made it to registration, about equally split between the Principal and Supplement Registers. We are looking at a reasonably-sized pool of marks that could be impacted, but it’s hardly a huge number when spread out over a decade.
It’s interesting to see how immediately the case is being adopted (at least by applicants) for arguments outside of the immediate fact pattern of the case: very weak or generic term + a gTLD. It will be interesting to follow these citations to see if the USPTO responds. Will it take a narrow interpretation of the decision, limiting its impact to marks that contain gTLDs. Or, will examination outcomes move a more permission approach to registration of the least distinctive marks?
We’ve been a little quiet with the blog posts lately — TM TKO is hard at work on several big content expansions! In the interim, we’ve made some small changes that should be useful to many of our users.
Knockout search export options
Knockout search exports now permit tagging and export of common-law results as an option.
Watch export additions
“Office Action” watch exports via CSV now include links to the Office Action.
Address-related Search and Export fields
We’ve added fields for more granular state and country searches of applicant and correspondent address information; this information is also included in CSV exports as a separate field.
International Registration number
This is included as a searchable field in search/watch, and included in CSV exports.
You client makes lasagna that it sells under the mark TONY’S PASTA, and their application gets a 2(d) citation to a prior registration for a TONY’S RONI for restaurant services. (The application is imaginary; the registration is real – Reg. No. 3502458). Let’s use TM TKO to do some research to help you find good arguments and evidence to support your Office Action Response, and secondarily marvel at how amazingly inconsistent examination outcomes from the USPTO can be. Onward!
Find Successful Arguments on These Facts
Let’s start by going to the Office Action search page, and searching for recent instances where applicants for food products in Class 29 overcame prior registrations in Class 43. We’ll limit the results to active, published applications where the prior registration is still active first — that will exclude some useful results, but also bypass any situations where the prior registration was “overcome” simply because it was cancelled or expired. It’s a complex-looking search, but conceptually pretty straightforward.
This search finds 336 Office Actions in Class 29 (that didn’t include Class 43) that overcame registrations in Class 43 (that didn’t include Class 29). We can limit even more by restricting it to just pasta – click New Search then Same Criteria, then add a rule to limit our results to just those that have pasta or lasagna in the description of goods.
Now we’re down to 42 results, like TUSCAN MARKET for pasta and retail stores overcoming a registration for TUSCAN KITCHEN for restaurant services and LIFE IS DELICIOUS. SIMPLY ENJOY overcoming a prior registration for LIFE IS DELICIOUS… TAKE A BITE for restaurant services, MARCELLA for pasta sauce overcoming a prior registration for MARCELLA’S for restaurant services, NEXT LEVEL MEALS for food overcoming a prior registration for NEXT LEVEL BURGER for restaurants, and more. Just click on the Citations button for details on the cited marks, and click on the magnifying glass to dive into the file histories. These are great resources to see how other attorneys overcame directly comparable refusals – how they used the case law, how they provided evidentiary support, how they chipped away at the Examining Attorneys’ evidence – so you can take do better work and maximize your own chances of success.
If you want to see the opposite fact pattern – applications for restaurant services overcoming prior registrations for foods – just use the “invert criteria” search. This finds sixty-plus examples, including AMY’S ICE CREAMS overcoming a variety of AMY’s marks, GRILL FRESH vs FRESH GRILL, TOPPERS vs VEGGIE TOPPERS, WAFFLEJACK vs HUNGRY JACK, BUFFBURGER vs BUFFBURGER, and more.
If you still needed more examples, you could remove the “Active” constraint — this will pull in more good examples, but also more instances where the cited mark was “overcome” only because the prior application went abandoned or the prior registration was cancelled or expired.
Find Evidence to Support the Argument
There are a few ways we might want to push back: providing some evidence that pasta and restaurant services aren’t closely related, and providing evidence that TONY is pretty diluted even as to restaurant services, and thus isn’t likely to cause confusion with food products.
A. Using ThorCheck® to Find Goods/Services Relationship Evidence
We’ll use ThorCheck to find evidence of identical or very similar marks, used for pasta or lasagna on the one hand and for restaurant services on the other. The evidence goes both ways. There are lots of examples of the same mark being registered for both, but there are also dozens examples of this sort of co-existence; even focusing on personal names, we have examples like GIULIA and RAO’S and BUDDY’s and BLAKE’S and AMY’S and lots of examples like PASTA MAMA’S vs MAMA’S PIZZA and ANTONIO’s vs ANTONIO’S PIZZA. ThorCheck makes it simple to find these examples. It’s a matter of a single click to export a Word chart to add to your Office Action Response and one more to pull TSDR status and title copies into an evidence stack to attach to your response.
B. Find Evidence of the Dilution of TONY in the Restaurant Field
This sort of evidence is commonplace in the successful responses we just searched for moments ago. A manual search (or even a knockout search) is the way to go. Run the search, flag the fifty-three coexisting TONY registrations for some sort of restaurant-ish services in Class 43, export the chart to Word to integrate into your draft Office Action Response, and then hit the TSDR export button to get your evidence stack ready to go in one click.
How’s the Trademark Office Doing?
The case law requires that “something more” that a mere possibility of overlap in order to find a likelihood of confusion, e.g. that both the food product and the restaurant are similar types of food. See, e.g.,In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (finding likely confusion between AZTECA MEXICAN RESTAURANT for restaurant services, and actually used for a Mexican restaurant, and AZTECA (with and without design) for Mexican food items).
How’s the trademark office doing in applying these standards? The “something more” language only makes it into about 1/5 of the outgoing Office Actions that have issued citations on similar facts. Where an Office Action is issued, the rate of overcoming it is far lower when the Examiner does use the “something more” language — from around 42% of applicants that get through to publication or registration for the refusals overall to just 26% that overcome the “something more” refusals. The Office is also, as ThorCheck finds, generating pretty inconsistent outcomes — sometimes an application will get refused, sometimes it will skate through and end up co-existing. The inconsistency is frustrating for applicants and their counsel, and rightfully so. I’m not sure what the solution would be, though; a per-se rule would make registration even more difficult.